[00:00:00] Speaker 03:
Thank you very much.

[00:00:03] Speaker 03:
Robert C. Ryan of Holland and Hart, arguing for Kemeon, the plaintiff and appellant.

[00:00:09] Speaker 03:
May it please the court.

[00:00:12] Speaker 03:
The core issue before the court in this case is whether the district court erred in granting summary judgment to the defendant, Simas, that Chemeon did not have standing under Article III or Section 1064 of the Lanham Act to seek cancellation of Simas's trademark registration, the 106 registration.

[00:00:39] Speaker 04:
Before we get to the

[00:00:41] Speaker 04:
standing issue, which I know that's the primary focus of the court.

[00:00:45] Speaker 04:
But I wanted to know your view about the, if you will, the settlement agreement that the bankruptcy court read into the record.

[00:00:54] Speaker 04:
Is it your view that the ban would apply even after the trademark entered the public domain?

[00:01:05] Speaker 04:
In other words, at some point, it becomes part of the public domain.

[00:01:09] Speaker 04:
So does that settlement agreement cover that period as well?

[00:01:12] Speaker 03:
Well, to be clear, the settlement agreement, I think it's unclear the answer to that question.

[00:01:24] Speaker 01:
Didn't a prior panel of this court affirm the injunction against your client using these marks?

[00:01:31] Speaker 01:
It did, using the medal-esque mark.

[00:01:34] Speaker 01:
Right, the medal-esque mark.

[00:01:35] Speaker 01:
Right.

[00:01:35] Speaker 01:
And so it seems to me what we have is

[00:01:39] Speaker 01:
law of the case that you can't use the mark.

[00:01:42] Speaker 01:
You might want to go back and argue to a court that the injunction should be modified, but the injunction doesn't say as long as the mark remains valid.

[00:01:50] Speaker 01:
So right now, until somebody changes an order of the district court, you can't use the mark, right?

[00:01:58] Speaker 03:
No, we can use the mark as long as we don't use it in commerce.

[00:02:01] Speaker 01:
Right, right.

[00:02:02] Speaker 01:
OK, fair enough.

[00:02:03] Speaker 01:
Fair enough.

[00:02:03] Speaker 01:
In commerce.

[00:02:04] Speaker 01:
That's a big, you know, as you understand.

[00:02:05] Speaker 01:
No, I understand.

[00:02:06] Speaker 01:
But Judge Smith's question is that there is a judgment in this case that you cannot use the mark in commerce.

[00:02:13] Speaker 03:
In commerce.

[00:02:16] Speaker 03:
And that's a big hole.

[00:02:18] Speaker 03:
What that means is completely unclear.

[00:02:19] Speaker 01:
But that's a different question than the one he asked.

[00:02:22] Speaker 04:
My question really deals with how long it goes.

[00:02:24] Speaker 04:
In other words, if you're a member of the general public,

[00:02:28] Speaker 04:
and the mark gets into the public domain, they can do whatever they want.

[00:02:32] Speaker 04:
So my question is whether the judgment here would bar you even more than a member of the general public once this goes into the public domain.

[00:02:43] Speaker 03:
It would be our contention that it should not.

[00:02:45] Speaker 01:
Well, but see, that's why I'm pushing back on you.

[00:02:49] Speaker 01:
You entered into a settlement agreement.

[00:02:52] Speaker 01:
As a matter of contract, you agreed not to use these marks in commerce.

[00:02:58] Speaker 01:
And this court said, that's fine.

[00:03:00] Speaker 01:
That's an agreement you made.

[00:03:02] Speaker 01:
And therefore, you can't use these marks in commerce.

[00:03:06] Speaker 01:
And so it seems to me you've got to somehow go back and seek

[00:03:11] Speaker 01:
revision of that judgment before you can say to us, oh, no, if something else happens, we can use them in commerce.

[00:03:18] Speaker 01:
I absolutely agree.

[00:03:19] Speaker 01:
We'd have to go to the court to ask to have it modified.

[00:03:21] Speaker 01:
Now, I want to ask you a different question.

[00:03:24] Speaker 01:
And it's one neither side has briefed very well, so I apologize in advance for this.

[00:03:30] Speaker 01:
Our case law says that under the statute, we can't entertain a standalone application to cancel a registration.

[00:03:40] Speaker 01:
It has to be brought in conjunction with a trademark case.

[00:03:45] Speaker 03:
Yes.

[00:03:45] Speaker 01:
For better or worse, where we now stand is all we have is a standalone application to cancel a registration.

[00:03:54] Speaker 01:
Because this is the only part of the case that's still alive.

[00:03:57] Speaker 01:
The court of the prior panel affirmed everything else in the case that was appealed.

[00:04:04] Speaker 01:
Help me with that.

[00:04:05] Speaker 01:
I mean, it just seems to me we're at a point now where our case law says this is an area we shouldn't muck around unless we're dealing with other aspects of the trademark.

[00:04:15] Speaker 03:
There's three categories of injury here.

[00:04:18] Speaker 01:
The question is... No, I don't doubt... Okay.

[00:04:21] Speaker 01:
I'm not pushing back at the moment on your contentions that

[00:04:24] Speaker 01:
Okay.

[00:04:26] Speaker 01:
What I'm pushing back on is that our case law, I recently sat on a case, the BBK case that involved this, our case law says the only way you can attack the registration of a trademark

[00:04:40] Speaker 01:
in an original action in federal court is in conjunction with another trademark action, an action for deluge, an action for infringement or something else.

[00:04:51] Speaker 01:
That was clearly the case when you brought your application for cancellation, but now we're at a later stage of the case and there is no more

[00:04:59] Speaker 01:
other dispute about the trademark.

[00:05:02] Speaker 01:
The only dispute in front of us is whether the registration should be canceled and I'm trying to figure out whether or not our interpretations of the statute tell us you shouldn't be doing that unless you're judging something else about the trademark.

[00:05:16] Speaker 03:
Because the trademark action was brought and voluntarily dismissed originally in this case as opposed to the related Shematal case.

[00:05:27] Speaker 01:
Right.

[00:05:28] Speaker 01:
Shematal is not in front of us.

[00:05:30] Speaker 01:
I'm talking about this and maybe somebody in Shematal could bring an application to cancel the registration.

[00:05:35] Speaker 01:
I'm just trying to think about this case given where we are now.

[00:05:39] Speaker 01:
Haven't we sort of run out of the reasons why we would consider a cancellation?

[00:05:42] Speaker 03:
Well, for example, the Supreme Court stated it already, the already decision, that the fact that a trademark action is voluntarily dismissed does not moot Article III standing, or for that matter, 1064 standing, to bring a cancellation claim.

[00:06:02] Speaker 03:
In that case, the claim that was brought.

[00:06:04] Speaker 03:
But there's something more here.

[00:06:05] Speaker 01:
We're missing each other, so I apologize.

[00:06:08] Speaker 01:
It wasn't just that it was voluntarily dismissed.

[00:06:12] Speaker 01:
It went up through an appeal, and every issue in the case other than the cancellation was resolved on that appeal.

[00:06:21] Speaker 01:
All we're left with now is a stand-alone proceeding that you're asking us to send back to the district court

[00:06:28] Speaker 01:
to determine whether or not the registration should be canceled.

[00:06:32] Speaker 01:
Yes.

[00:06:32] Speaker 01:
And can we do that?

[00:06:35] Speaker 03:
No.

[00:06:36] Speaker 03:
Yes, you can.

[00:06:36] Speaker 03:
Because it was a voluntary dismissal.

[00:06:39] Speaker 03:
And the question that the already court addressed was, is there threatened injury even though there was voluntary dismissal?

[00:06:48] Speaker 03:
And the reason is because, and as Seamus claimed in this case, and is on the record in this case, he can go after post-dismissal conduct and accuse it of infringement in this case.

[00:07:02] Speaker 03:
And he's doing that also in the Shemital case, where he's accusing our client of civil conspiracy with its distributors.

[00:07:09] Speaker 03:
But you're not a party to that case.

[00:07:11] Speaker 03:
Well, we've moved to intervene.

[00:07:13] Speaker 03:
That case has stayed.

[00:07:15] Speaker 03:
There's a motion to intervene.

[00:07:16] Speaker 04:
Can I get to the clarification here?

[00:07:18] Speaker 04:
As I understood it, Seamus basically acknowledged that he didn't have rights to the Navy, what I want to call the agreement.

[00:07:29] Speaker 04:
That's allegedly yours, right?

[00:07:31] Speaker 04:
That's correct.

[00:07:32] Speaker 04:
What role does that mark and the use of that mark play in this case, if any?

[00:07:38] Speaker 03:
I believe your honor is referring to the Navy TCP license.

[00:07:43] Speaker 03:
Correct.

[00:07:44] Speaker 03:
It's undisputed on the record that's a very coveted license.

[00:07:48] Speaker 03:
They're a big deal.

[00:07:48] Speaker 01:
That's a patent, is it not?

[00:07:50] Speaker 03:
It's a patent license.

[00:07:52] Speaker 03:
It's not a mark.

[00:07:53] Speaker 03:
That's right.

[00:07:53] Speaker 03:
It's a patent license.

[00:07:54] Speaker 04:
So what role does that play, if any, in this case?

[00:07:57] Speaker 03:
Because in the renewal that he filed in June of 2015, he states that his company, MII, My Last International, Inc.,

[00:08:08] Speaker 03:
which was the manager of the company.

[00:08:10] Speaker 04:
That was the renewal of the mark.

[00:08:12] Speaker 03:
That was the renewal of the registration in the MARC, in the 106 registration.

[00:08:16] Speaker 03:
He files a document saying it's a specimen of use.

[00:08:22] Speaker 03:
He says it's a use, it's a 2008 specimen.

[00:08:26] Speaker 03:
He says it's evidence of current use, false.

[00:08:29] Speaker 03:
And by the way, he admitted all this at deposition.

[00:08:32] Speaker 03:
It's uncontested.

[00:08:33] Speaker 01:
He admitted.

[00:08:34] Speaker 01:
Well, no, I'm assuming, I can assume for a moment that misstatements or even fraudulent statements were made in the application.

[00:08:40] Speaker 01:
But you're claiming harm from the registration, are you not?

[00:08:47] Speaker 03:
And the renewal.

[00:08:48] Speaker 01:
Well, see, we don't have any case.

[00:08:51] Speaker 01:
Tell me what case says that you can move into.

[00:08:54] Speaker 01:
BBK says it, but BBK says only if there's an existing action.

[00:08:57] Speaker 01:
The district court.

[00:08:59] Speaker 01:
Are you seeking to cancel the application?

[00:09:02] Speaker 03:
Sort of a strange thing, because it's been renewed.

[00:09:06] Speaker 03:
The application and the renewal are all part of the registration as a matter of law.

[00:09:13] Speaker 03:
And the district court in this case held, and no one appealed that, that it could be fraud in the renewal or the registration.

[00:09:22] Speaker 01:
It could be cancellation.

[00:09:23] Speaker 01:
So you think you can attack the registration?

[00:09:24] Speaker 01:
Let's assume that the registration would have been approved, even absent the misstatement.

[00:09:29] Speaker 01:
You think you can independently attack the renewal because the registration has false statements?

[00:09:35] Speaker 03:
Yes, through the renewal.

[00:09:37] Speaker 01:
I know the district court held that.

[00:09:39] Speaker 03:
I'm trying to figure out who else has held it.

[00:09:41] Speaker 03:
Well, I think it's pretty classic Horn Book law that if you've done something like that in renewing, it's fraud that can yield cancellations.

[00:09:50] Speaker 01:
Of the cancellation of the renewal application as opposed to the registration?

[00:09:57] Speaker 01:
Yeah, the registration.

[00:09:59] Speaker 03:
And the same can happen with patents.

[00:10:01] Speaker 04:
Let me ask you this.

[00:10:02] Speaker 04:
Putting aside the standing issue for a moment, where I probably agree with you, didn't the district court conclude, and I'm reading, that it rejects Chameon's argument that same as fraudulently obtained ownership of the medalist word mark and logo marks?

[00:10:21] Speaker 04:
Now, that's a finding.

[00:10:23] Speaker 04:
Are we not bound by that?

[00:10:25] Speaker 04:
In other words, has that already been litigated?

[00:10:27] Speaker 03:
I'm sorry, Your Honor, I have bad hearing.

[00:10:29] Speaker 04:
No, no, I understand.

[00:10:31] Speaker 04:
I'll read it to you again.

[00:10:32] Speaker 04:
What I'm saying is, putting aside for a moment the standing issue, it seems to me the district court concluded, and I'm reading here, it rejects Omarion's argument that Seamus fraudulently obtained ownership of the medalist, word mark, and logo marks.

[00:10:50] Speaker 04:
And that's at 3ER 486.

[00:10:53] Speaker 04:
So if that's what the district court found,

[00:10:58] Speaker 04:
Is that race judicata?

[00:10:59] Speaker 04:
Are we bound by that?

[00:11:00] Speaker 03:
Well, it is, but all she said there was ownership, that he fraudulently obtained ownership of the mark.

[00:11:08] Speaker 03:
Well, what was your argument about how they fraud?

[00:11:10] Speaker 03:
Well, that's not what we were contending, was the problem.

[00:11:12] Speaker 04:
You want to cancel it, but doesn't that go to the ownership?

[00:11:15] Speaker 04:
Are you saying

[00:11:16] Speaker 03:
We want to cancel it.

[00:11:17] Speaker 04:
There would be no ownership.

[00:11:20] Speaker 03:
I'm sorry.

[00:11:20] Speaker 03:
I don't mean to be cutting you off.

[00:11:22] Speaker 03:
That's all right.

[00:11:23] Speaker 04:
No, go ahead.

[00:11:24] Speaker 03:
The fraud was not about who owned the metal ass mark.

[00:11:29] Speaker 03:
The fraud that we're talking about is misusing our property, my client's property, its IP, its reputation, and its goodwill to procure renewal.

[00:11:42] Speaker 03:
So it's not about ownership.

[00:11:44] Speaker 03:
There was a contention in the case earlier about ownership.

[00:11:48] Speaker 03:
But that's not what we're talking about here.

[00:11:50] Speaker 03:
What do they have to do to get renewal?

[00:11:52] Speaker 03:
They have to file a statement of use that they're currently using the mark in commerce.

[00:11:57] Speaker 03:
Right.

[00:11:58] Speaker 03:
And you don't dispute that?

[00:12:00] Speaker 01:
It's undisputed that he wasn't using the mark in commerce.

[00:12:03] Speaker 01:
But that's not what you're claiming is fraudulent.

[00:12:05] Speaker 03:
What we're claiming is fraudulent.

[00:12:07] Speaker 03:
It was the specimens that he filed for the job pro software, which is owned by cameo

[00:12:16] Speaker 03:
for the TCPHF product, which is Chemian's, it's undisputed in the record, its leading product.

[00:12:24] Speaker 01:
Were those cited to show that the mark was currently being used in commerce?

[00:12:28] Speaker 03:
Yes.

[00:12:29] Speaker 03:
By him?

[00:12:30] Speaker 03:
Yes, because you have to file specimens of use for each class in the registration.

[00:12:36] Speaker 03:
In this case, there was class 9, which was software, and there was, I forget the class, maybe it was 25, another class for chemical products.

[00:12:47] Speaker 03:
So he submitted the TCPHF label, right, and that's what says that he has a Navy license to make TCP.

[00:12:55] Speaker 03:
He does not.

[00:12:56] Speaker 04:
Okay, let me be sure I understand your position here.

[00:13:00] Speaker 04:
In response to Judge Hurwitz's initial comment about our courts already decided this, we've got rule of the case, you're saying that because the cancellation of the mark was voluntarily dismissed, that the case law permits you nonetheless to move forward.

[00:13:17] Speaker 04:
Is that correct?

[00:13:18] Speaker 03:
Yes.

[00:13:19] Speaker 04:
Okay.

[00:13:19] Speaker 04:
And that secondly, as evidence of that,

[00:13:23] Speaker 04:
what you just talked about.

[00:13:24] Speaker 04:
They cited all these things that they allegedly using it for.

[00:13:27] Speaker 04:
Clearly not the case.

[00:13:29] Speaker 04:
You've got a clear shot, assuming you have standing.

[00:13:31] Speaker 04:
Is that correct?

[00:13:32] Speaker 03:
That's correct.

[00:13:33] Speaker 04:
Okay.

[00:13:34] Speaker 03:
And we believe that the record is replete with evidence of standing that the district court did not address or dismissed.

[00:13:41] Speaker 00:
Mr. Ryan, on that point, we started there and hopefully

[00:13:45] Speaker 00:
Judge Smith will give me a little time to work through this with you.

[00:13:50] Speaker 00:
What is left for Cameon's use of the mark?

[00:13:56] Speaker 00:
I'm trying to understand, given the settlement, what's the harm going forward?

[00:14:02] Speaker 00:
I think the declaration is ...

[00:14:04] Speaker 00:
Quite summary.

[00:14:07] Speaker 00:
It just says goodwill trademark is basically just restates your claim So what's the harm in this registration to your client?

[00:14:17] Speaker 03:
Because it misrepresents our property, my client's property.

[00:14:20] Speaker 00:
To what end?

[00:14:20] Speaker 00:
How does that create economic damage to your client?

[00:14:27] Speaker 03:
Because people who look at it are misled.

[00:14:29] Speaker 00:
And where is it in the record, in the declaration, where you establish that?

[00:14:36] Speaker 03:
Where in the record do we establish what?

[00:14:39] Speaker 00:
You say people.

[00:14:40] Speaker 00:
That's quite vague for us to... It's in the public record.

[00:14:44] Speaker 03:
It's PTO.

[00:14:45] Speaker 03:
You can look at it from your computer.

[00:14:46] Speaker 00:
You can, but you haven't alleged, let alone shown anything on summary judgment in the declaration that people have to your detriment.

[00:14:53] Speaker 00:
There's no content.

[00:14:54] Speaker 03:
Nobody argued that below.

[00:14:56] Speaker 03:
that people weren't looking at it.

[00:14:57] Speaker 00:
Well, it's on you to establish standing and that you're harmed.

[00:15:00] Speaker 00:
I'm just wondering, can you throw me a site to the record somewhere where you actually specifically identify a harm to your client from the fact that this has been registered?

[00:15:10] Speaker 03:
Well, I think, I'm sorry, Your Honor, because it's in the public record and no one's contended, there's not a contention before this court that people don't look at it.

[00:15:21] Speaker 03:
People do look at it all the time.

[00:15:23] Speaker 03:
They do, I mean seriously.

[00:15:25] Speaker 00:
Do you have a case that establishes we can just assume that people are looking at something that might be lots of things are in the public record but that's often not enough to establish injury?

[00:15:33] Speaker 03:
But that's not in dispute in this case, Your Honor.

[00:15:36] Speaker 00:
Well, it's always in dispute if it affects our jurisdiction.

[00:15:41] Speaker 03:
Well, if the court would like us to address that, it wasn't contested below.

[00:15:46] Speaker 03:
We would be pleased.

[00:15:49] Speaker 03:
Of course, you can raise that question if you want.

[00:15:51] Speaker 03:
We'd like to brief it.

[00:15:53] Speaker 00:
Can you just let me know the best place in the record to find any injury other than the abstract sense that it's in the record?

[00:16:01] Speaker 00:
Where should I go?

[00:16:03] Speaker 00:
declaration, where should I go on the record to look?

[00:16:06] Speaker 00:
Who's talking about the harm to your client?

[00:16:08] Speaker 04:
Why don't we do this?

[00:16:09] Speaker 04:
We'll give you a couple of minutes of rebuttal, even though you've used up your time, and you could answer Judge Don Stone's question when you come up to do that.

[00:16:16] Speaker 04:
Would that be good?

[00:16:16] Speaker 04:
Yes, thank you.

[00:16:17] Speaker 03:
Let's do that.

[00:16:18] Speaker 04:
Thank you, Judge.

[00:16:19] Speaker 04:
All right.

[00:16:20] Speaker 04:
So Mr. Hoy.

[00:16:27] Speaker 02:
Good morning.

[00:16:28] Speaker 02:
My name is Michael Hoy.

[00:16:30] Speaker 02:
I represent the Apple Ease from primarily for this hearing.

[00:16:34] Speaker 02:
David Seamus.

[00:16:35] Speaker 02:
Um, first of all, Judge Hurwitz, I apologize for the deficiencies in our well, maybe they're not deficiencies.

[00:16:42] Speaker 01:
Maybe I'm wrong.

[00:16:42] Speaker 01:
Tell me.

[00:16:43] Speaker 01:
Tell me what the answer is to my question.

[00:16:44] Speaker 02:
Well, I get to the same place that you do, evidently in a case that I haven't read yet, which is this case is fundamentally different than a lot of the standing cases in the sense that most standing cases are decided early on in the proceeding, usually on motions to dismiss 12B1 or 12B6, depending on whether it's constitutional or statutory standing.

[00:17:11] Speaker 02:
In this case, we had

[00:17:12] Speaker 02:
Well, we're in our ninth year of this case.

[00:17:15] Speaker 02:
We've had five or six years of discovery.

[00:17:17] Speaker 02:
We've had a trial on the merits.

[00:17:20] Speaker 02:
And the findings of fact, conclusions of law, and judgment in this case pretty much gut the case for cancellation.

[00:17:28] Speaker 01:
Well, I'm not sure they got the case for cancellation.

[00:17:32] Speaker 01:
My question wasn't about how good his case for cancellation is.

[00:17:36] Speaker 01:
My question was about this.

[00:17:37] Speaker 01:
We all agree, I think your friend does too, that if he'd merely brought a suit for cancellation of your mark, whether the initial mark or the renewed mark, we couldn't consider it.

[00:17:49] Speaker 01:
Because our case law says we can't consider standalone claims for cancellation of a mark.

[00:17:56] Speaker 01:
We can only do so

[00:17:58] Speaker 01:
under, was it 1099, I think, in conjunction with a trademark dispute.

[00:18:05] Speaker 01:
At the beginning of this case, there was a trademark dispute.

[00:18:08] Speaker 01:
You said, I'm not violating his trademark.

[00:18:10] Speaker 01:
He said, yes, you are.

[00:18:14] Speaker 01:
So at that point, I think a cancellation claim falls squarely within our case law that says you can bring it in conjunction with the trademark dispute.

[00:18:23] Speaker 01:
What I'm trying to figure out, and I must admit there's no case on this that I can find, is what happens when that trademark dispute goes away entirely through previous appellate proceedings?

[00:18:39] Speaker 01:
everything's been affirmed, and now all we're left with is this standalone claim, which would have been okay to bring at the time, but now there's no trademark dispute that it's left in conjunction with.

[00:18:53] Speaker 01:
I know that's a long statement.

[00:18:55] Speaker 01:
Help me with that.

[00:18:56] Speaker 02:
Well, so we have two separate mootness issues in the case now.

[00:19:03] Speaker 02:
One was the cancellation counterclaim, I'm sorry,

[00:19:08] Speaker 02:
cancellation claim in response to the counterclaim for infringement, when that counterclaim was dismissed, does that moot the cancellation claim?

[00:19:17] Speaker 01:
And number two, do the findings... Yeah, and Nike seems to tell me that it didn't.

[00:19:22] Speaker 01:
So let's assume for a moment that the dismissal of the counterclaim didn't moot it.

[00:19:29] Speaker 01:
I'm just trying to figure out now, everybody agrees, all we have left in this case is whether or not the

[00:19:35] Speaker 01:
the registration should be canceled.

[00:19:37] Speaker 01:
And so can we do that?

[00:19:40] Speaker 02:
Well, pardon me.

[00:19:44] Speaker 02:
Standing both under the Constitution and under 1064 requires some demonstration of a species of harm with respect to the statute, a species of harm that falls within the zone of interest or the real interest as defined in 15 U.S.C.

[00:20:01] Speaker 02:
1127.

[00:20:03] Speaker 02:
So to the extent that we've had a trial and the trial negates those species of harm or alleged harm, that destroys the standing to continue on with the cancellation counteroffensive.

[00:20:23] Speaker 01:
Well, see, I'm not sure that the trial disposes of

[00:20:27] Speaker 01:
potential harm.

[00:20:28] Speaker 01:
He says you might sue me in the future.

[00:20:30] Speaker 01:
We have uncertainty with our distributors.

[00:20:33] Speaker 01:
You've lied about in your application about what the facts are.

[00:20:37] Speaker 01:
I think he can allege harm from those things.

[00:20:40] Speaker 01:
And so I just think we're just missing each other and it must be me because I missed with your friend too.

[00:20:47] Speaker 01:
Can we, can a district court adjudicate now a standalone claim for cancellation even if they're standing to do it?

[00:20:57] Speaker 01:
Does the statutes give the district court the power to adjudicate a standalone claim for cancellation?

[00:21:05] Speaker 02:
In the abstract, Your Honor, I'm not sure.

[00:21:06] Speaker 02:
Okay, that's a fair answer.

[00:21:08] Speaker 01:
I'm not aware of the case.

[00:21:09] Speaker 01:
I won't bother you about it anymore.

[00:21:11] Speaker 04:
Then let me follow up with that.

[00:21:12] Speaker 04:
Your friend on the other side says that what saves him is that he voluntarily dismissed the cancellation claim.

[00:21:20] Speaker 04:
So therefore, it's still out there from his perspective.

[00:21:24] Speaker 04:
What's your response to that?

[00:21:27] Speaker 02:
that Cameon voluntarily dismissed its cancellation?

[00:21:31] Speaker 04:
Dismissed the action for the cancellation of the trademark.

[00:21:36] Speaker 02:
I beg your pardon, Your Honor.

[00:21:37] Speaker 02:
What happened is Cameon started this case, my client, the trade.

[00:21:42] Speaker 02:
Cameon started the case alleging affirmatively that it did not infringe on my client's trademark because it had a legal right to call its products and itself formally metalized.

[00:21:55] Speaker 02:
CMOS then files a counterclaim saying you've infringed on my marks.

[00:22:03] Speaker 02:
Kemeon then amends its complaint in the second amended complaint and then it carries forward to the current complaint, which is the third, saying we want to cancel at least one of the registrations of four or five registrations.

[00:22:19] Speaker 02:
So, Kemeon never dismissed its cancellation claim.

[00:22:24] Speaker 02:
What happened is Seamus dismissed his counterclaim for infringement.

[00:22:29] Speaker 01:
And the district court found no standing to pursue the cancellation claim, so never reached it on the merits.

[00:22:36] Speaker 01:
Correct, Your Honor.

[00:22:36] Speaker 01:
And then the Court of Appeals, us, not the three of us, but three other judges in the Court of Appeals at some previous point said,

[00:22:44] Speaker 01:
I want you to take another look at your standing ruling, because Lex Mark has intervened, and we're not sure you're right.

[00:22:51] Speaker 01:
So that claim was never dismissed except by the court for cancellation.

[00:22:57] Speaker 04:
Correct.

[00:22:57] Speaker 04:
So again, it's kind of a tactical deal.

[00:23:01] Speaker 04:
So where are we at this point?

[00:23:03] Speaker 04:
Let's argue window.

[00:23:03] Speaker 04:
Let's assume there is standing, despite what the district court said.

[00:23:08] Speaker 04:
Where do we stand?

[00:23:09] Speaker 04:
In this, you've got the third amended complaint.

[00:23:12] Speaker 04:
They allege cancellation.

[00:23:14] Speaker 04:
You at that point argued that the case was won, basically, right?

[00:23:18] Speaker 04:
Their cause of action was never dismissed.

[00:23:22] Speaker 04:
Is that correct?

[00:23:23] Speaker 02:
Correct.

[00:23:24] Speaker 02:
The cancellation claim was never dismissed.

[00:23:27] Speaker 02:
the court entered a defense summary judgment on the cancellation claim.

[00:23:33] Speaker 04:
Based on standing.

[00:23:34] Speaker 04:
So if arguing though, we concluded that there was standing, then his claim is still live, right?

[00:23:41] Speaker 04:
Or could be live.

[00:23:42] Speaker 02:
Yes.

[00:23:43] Speaker 02:
And then we go have a hearing on the merits of the cancellation.

[00:23:46] Speaker 04:
So now with any of my friends on the panel here concerned about our case law, there would still be a viable trademark

[00:23:56] Speaker 04:
action we would be considering.

[00:23:57] Speaker 01:
In that context, assuming the standing issue is resolved.

[00:24:11] Speaker 01:
Not that there's an absence of standing, but there's no jurisdiction at this point.

[00:24:15] Speaker 01:
But that's not an argument you've made to us.

[00:24:17] Speaker 01:
Correct.

[00:24:18] Speaker 00:
Mr. Hoy, I guess I wonder if you could respond to the Navy license question and why that wouldn't constitute something that's covered by the statute.

[00:24:34] Speaker 02:
The Navy owns a patent to make certain chemicals.

[00:24:38] Speaker 02:
The Navy has licensed that technology, not just to Kemeon exclusively, but to other chemical companies in the United States and globally.

[00:24:51] Speaker 00:
And so after the settlement... Has it licensed it to your, as I understand the dispute, is whether it's been licensed to your client anymore, whether that license stands?

[00:25:01] Speaker 02:
No, my client does not own the Navy license and never did.

[00:25:05] Speaker 00:
Okay.

[00:25:05] Speaker 00:
So how would you speak to the, the concerns about the Navy license that that's, that's the injury here, um, under the, the mark and that that's outside of the settlement agreement.

[00:25:14] Speaker 02:
Sure.

[00:25:15] Speaker 02:
Mike, my client owns the metal last brand and trademark.

[00:25:20] Speaker 02:
There are at least four or five licensees under the Navy TCP patent.

[00:25:27] Speaker 02:
My client can go to any of those manufacturers and say, would you like to also market this chemistry under the metal ass name?

[00:25:39] Speaker 02:
Okay?

[00:25:39] Speaker 02:
So, Chemion doesn't have any exclusive right to sell patented chemicals, and it never

[00:25:48] Speaker 02:
going forth has the right to use metalast to brand those chemicals.

[00:25:54] Speaker 02:
But my client certainly has the right to go to Acme Chemical, I'm just making up names, and say, would you like to sell this chemistry under the metalast mark?

[00:26:05] Speaker 01:
And that has... And is that the use that you alleged in your renewal application to show that the mark was in use?

[00:26:15] Speaker 02:
I think there's some misunderstanding in the case about what a renewal really is.

[00:26:22] Speaker 02:
So the renewal application is, yes, this mark is being used in commerce.

[00:26:30] Speaker 01:
Right.

[00:26:31] Speaker 01:
And what did you allege in your renewal application to show that the mark was being used in commerce?

[00:26:38] Speaker 02:
There's an affidavit that says the mark is being used in commerce.

[00:26:42] Speaker 02:
There's a label from 2008, and the label belongs to my client, actually, METALAS International Inc., and that goes back to a time when a distributor, and I think it's Qualicam was the distributor.

[00:26:59] Speaker 01:
I've read this stuff, and I must admit I may have misread it, but didn't you also say in your renewal application,

[00:27:07] Speaker 01:
Some of these licensees of the Navy patent were using it also.

[00:27:13] Speaker 02:
I don't recall that's in the record, Your Honor.

[00:27:15] Speaker 01:
You don't think that's in the record?

[00:27:16] Speaker 01:
That's what I thought your friend said to me.

[00:27:19] Speaker 02:
No.

[00:27:21] Speaker 02:
The mark is in use in commerce.

[00:27:23] Speaker 01:
So what is the reference to the licensees of the Navy patent in your renewal application?

[00:27:29] Speaker 01:
What does it say factually?

[00:27:31] Speaker 02:
I don't think it says anything about that.

[00:27:32] Speaker 01:
What does it say about the Navy patent in your renewal application?

[00:27:36] Speaker 02:
I don't believe it says anything, but at the time of the renewal, that mark was in use in commerce by Chemion, which at the time was known as metal-ass surface technology.

[00:27:50] Speaker 01:
Well, I'm trying to figure out, and maybe I need to ask your friend this.

[00:27:53] Speaker 01:
He says you lied in your renewal application about something relating to the Navy patent.

[00:28:00] Speaker 01:
What did you say in your renewal application that relates to the Navy patent?

[00:28:06] Speaker 02:
I think the alleged lie is simply this, that my client submitted his affidavit with an exemplar label.

[00:28:15] Speaker 01:
Right, the exemplar label was by somebody who had a license from the Navy patent, wasn't it?

[00:28:21] Speaker 02:
Yes.

[00:28:21] Speaker 02:
Met a last LLC at the time of the label.

[00:28:25] Speaker 02:
was a licensee.

[00:28:26] Speaker 02:
That license was later transferred to my friend's client.

[00:28:32] Speaker 04:
So again, to round this up again, if we find that Chamion has standing, you would agree that this could be sent back to the district court to litigate the issue, the cause of action, of whether the trademark could be terminated, right?

[00:28:54] Speaker 04:
Canceled canceled.

[00:28:55] Speaker 04:
Yes.

[00:28:56] Speaker 04:
Okay All right now

[00:29:00] Speaker 02:
This is a summary judgment proceeding.

[00:29:04] Speaker 02:
And so I want to go back to the rulings on summary judgment.

[00:29:08] Speaker 02:
First of all, the judge observed that Kemeon didn't even respond to arguments about constitutional standing at all.

[00:29:18] Speaker 01:
You say that, but the truth is we have to determine whether there's constitutional standing.

[00:29:24] Speaker 01:
So the fact that they didn't respond doesn't really help us if the record demonstrates there's constitutional standing or that there isn't.

[00:29:32] Speaker 01:
I mean, we have to just make that determination on whatever's in the record, not on their arguments in response.

[00:29:38] Speaker 02:
Sure.

[00:29:38] Speaker 02:
It is definitely de novo review on standing issues.

[00:29:42] Speaker 02:
But the district court had to look at the pleading, Kemyon's pleading, and observed two paragraphs, 210 and 211,

[00:29:53] Speaker 02:
which simply alleged Kemeon has been and will continue to be damaged by David Seamus' purported federal trademark registration of the medal last mark, paragraph 210.

[00:30:02] Speaker 02:
And Seamus, quote, enjoys the approval of exclusive rights in the medal last mark, which it has used, threatens to continue to use, and has offered to sell to competitors of Kemeon to disrupt its legitimate business operations.

[00:30:16] Speaker 02:
And this is where the trial,

[00:30:19] Speaker 02:
I think that's a good question.

[00:30:23] Speaker 02:
I think that's a good question.

[00:30:34] Speaker 02:
Goodwill is tied to the trademark.

[00:30:37] Speaker 02:
And so when Kemeon bargained away ownership of the trademark in 2015.

[00:30:43] Speaker 01:
Well, not only bargained away ownership, it stipulated to a settlement agreement that said it could not use it.

[00:30:50] Speaker 02:
Correct.

[00:30:50] Speaker 01:
So I don't see how we can claim any damage from the fact that its competitors can use it.

[00:30:57] Speaker 01:
But what it's claiming here is that it's been damaged

[00:31:01] Speaker 01:
Because in your renewal application, you lied about them.

[00:31:06] Speaker 01:
I don't want to get to the merits of that.

[00:31:09] Speaker 01:
That's what it's claiming.

[00:31:10] Speaker 01:
And it says, and that renewal application is sitting there for the whole world to read, and that's damaged us.

[00:31:17] Speaker 01:
And so we want to cancel that thing so it's no longer sitting at the PTO for people to read.

[00:31:24] Speaker 01:
Respond to that, because it seems to me that's their stronger argument.

[00:31:27] Speaker 02:
With respect, Your Honor, I don't think that's a strong argument at all, because the damage for cancellation has to be what damage flows from the continuing registration of a mark, not statements in the public record.

[00:31:46] Speaker 02:
So that's the proximate cause

[00:31:48] Speaker 02:
piece of the 1064 analysis.

[00:31:52] Speaker 02:
What is the interest that's being protected by cancellation of the mark?

[00:31:56] Speaker 02:
It's the continuation.

[00:31:58] Speaker 04:
Let me ask you this.

[00:31:59] Speaker 04:
This is a common sense thing.

[00:32:01] Speaker 04:
Again, arguing if they're standing, send it back to the district court.

[00:32:06] Speaker 04:
If the mark is canceled, you're starting all over again.

[00:32:10] Speaker 04:
They could claim it.

[00:32:11] Speaker 04:
You could claim it.

[00:32:12] Speaker 04:
Somebody could claim it.

[00:32:13] Speaker 04:
Nobody could claim it.

[00:32:14] Speaker 04:
The reality is the mark

[00:32:18] Speaker 04:
up until this point is in your, you own it.

[00:32:22] Speaker 04:
The court said so, our court agreed, but if it's canceled, then things change, right?

[00:32:29] Speaker 02:
In this case, no, Your Honor, and this is one, it's because you have a contract with them that says they won't use it.

[00:32:36] Speaker 04:
We have a contract.

[00:32:37] Speaker 04:
But that assumes the existence of the mark.

[00:32:40] Speaker 04:
If the mark gets canceled, then it doesn't really help them.

[00:32:45] Speaker 02:
Your Honor, that's what's so bizarre about this litigation.

[00:32:48] Speaker 02:
This medal-asked word mark is not merely registered under 2963106, which is the issue here.

[00:32:58] Speaker 02:
It's also registered under three or four other registration numbers.

[00:33:03] Speaker 02:
And my reading of those later registrations is that they are even more encompassing than the 106 registration.

[00:33:12] Speaker 04:
The only one the court covered was 106.

[00:33:15] Speaker 02:
Exactly, Your Honor.

[00:33:16] Speaker 04:
I think we could talk about this case forever.

[00:33:18] Speaker 04:
This is a good trademark law class, and I'm sure that the two of you have benefited, and your children have gone to college well based on the fees that you've earned in this nine-year case.

[00:33:30] Speaker 04:
And you may go longer.

[00:33:31] Speaker 04:
Who knows?

[00:33:32] Speaker 02:
Both of my kids graduated university before this case started.

[00:33:36] Speaker 02:
Oh, my gosh.

[00:33:37] Speaker 02:
OK.

[00:33:37] Speaker 02:
All right.

[00:33:37] Speaker 04:
Well, thank you.

[00:33:38] Speaker 03:
Thank you, Your Honor.

[00:33:39] Speaker 04:
You have a couple of minutes to respond.

[00:33:43] Speaker 03:
I'd like to point out that a lot of... Wait until you get behind the thing, because you won't be recorded.

[00:33:48] Speaker 04:
And also answer my colleague's question that... Yes, okay.

[00:33:52] Speaker 03:
First to that, with regard to whether there's evidence of people actually having looked at it, there is no evidence of that.

[00:34:01] Speaker 01:
Now, there is... Is that trait... So now I get back to the point that your friend just made, and this is important.

[00:34:08] Speaker 01:
is the fact that people, even if people have looked at it, is that trademark damage?

[00:34:15] Speaker 01:
Is that damage from the registration?

[00:34:17] Speaker 01:
In other words, you're not really claiming you're entitled to use the mark.

[00:34:23] Speaker 03:
For example, what Your Honor just heard, none of which is in the briefs from my opposing counsel.

[00:34:30] Speaker 03:
Most of what he was saying is not in the briefs.

[00:34:33] Speaker 00:
Oh, yeah, OK.

[00:34:33] Speaker 00:
Well, let's just, and just to frame this maybe a little more particularly, because we've only got a minute.

[00:34:38] Speaker 00:
All right, 1064 talks about damaged as a result of dilution by blurring or dilution by tarnishment.

[00:34:44] Speaker 00:
So it's not dilution by use.

[00:34:46] Speaker 00:
Is the damage that you're seeking fall within the heartland of that question of blurring or tarnishment as to who owns the name?

[00:34:54] Speaker 03:
OK.

[00:34:56] Speaker 03:
That including language was added to the statute in 1992, I believe, because the statute before then was just about this.

[00:35:06] Speaker 00:
Oh, just tell me why yes, because you need us to say yes.

[00:35:08] Speaker 00:
You need us to agree with you that yes, it does fall within that.

[00:35:11] Speaker 00:
And why?

[00:35:13] Speaker 03:
Because that mentioning of dilution is not a limitation in the statute.

[00:35:18] Speaker 03:
The statute applies when you're asserting a trademark infringement claim of any type.

[00:35:24] Speaker 03:
Okay, that's 1064 applies.

[00:35:27] Speaker 03:
Dilution, by the way, is only with regard to famous marks.

[00:35:32] Speaker 03:
So if you read dilution to be a limitation in the statute, and that's required, the district court didn't hold that, by the way.

[00:35:42] Speaker 03:
And the district court acknowledged that nobody has appealed it in this case, that there's not a notice of appeal from the other side, challenging her holding that a trademark infringement claim justifies a cancellation counterclaim.

[00:36:01] Speaker 04:
We could talk about this forever, but any essential questions we need to ask counsel?

[00:36:05] Speaker 04:
No.

[00:36:05] Speaker 04:
We thank you both.

[00:36:06] Speaker 04:
Thank you.

[00:36:06] Speaker 04:
You're a learned counsel.

[00:36:07] Speaker 04:
We appreciate it.

[00:36:08] Speaker 04:
It's a very specialized area of the law, and we appreciate your assistance with this case.

[00:36:13] Speaker 03:
Could I give you one citation to answer your question?

[00:36:15] Speaker 03:
Citation, yes.

[00:36:16] Speaker 03:
You can file a supplement.

[00:36:17] Speaker 03:
Why don't you, instead of reading it, file a supplemental citation.

[00:36:21] Speaker 01:
So that we all have it.

[00:36:23] Speaker 04:
Thank you so much.

[00:36:24] Speaker 04:
Thanks, counsel.

[00:36:25] Speaker 04:
Appreciate it.

[00:36:26] Speaker 04:
The case just argued is submitted.